Sony Corporation

Patent Trials and Appeals BoardMar 18, 2021

2019006620 (P.T.A.B. Mar. 18, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/527,543 05/17/2017 Masahiro Uno 880001-6311-US01 6471 165569 7590 03/18/2021 MICHAEL BEST & FRIEDRICH LLP (SONY) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER BALSECA, FRANKLIN D ART UNIT PAPER NUMBER 2685 NOTIFICATION DATE DELIVERY MODE 03/18/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DCipdocket@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MASAHIRO UNO _____________ Appeal 2019-006620 Application 15/527,543 Technology Center 2600 ______________ Before JOHN A. JEFFERY, ERIC S. FRAHM, and SCOTT E. BAIN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge FRAHM. Opinion Dissenting filed by Administrative Patent Judge JEFFERY. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3–6, and 11–20, all of the claims pending in the 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sony Corporation (Appeal Br. 2). Appeal 2019-006620 Application 15/527,543 2 instant application. Claims 2 and 7–10 have been canceled (see Appeal Br. 11–12). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Introduction Appellant’s Disclosed and Claimed Invention Appellant’s disclosed invention “relates to communication devices, communication methods, and programs, and more particularly, to a communication device, a communication method, and a program that enable improvement in security of electric field communication” (Spec. 1:6–10; ¶ 1), and specifically “intra-body communication using the human body as the communication medium” (Spec. 1:15–16; ¶ 2) to communicate between the intra-body device the user is wearing (see Fig. 2, 31; Fig. 3; Fig. 5, 40) and a counterpart communication device external to the user’s device (see Fig. 2, 32; Fig. 5, 100). Appellant discloses and claims a double authentication process (i.e., before authentication of a user and authorization for communication is given, two things must happen) for authorizing electric field communication between a communication device (worn on the user) and a counterpart communication device (external to the user and the communication device) by authenticating the user based on detection of (1) the user’s biological information,2 and (2) a touch action of the user (see Spec. 18:24–23:10; ¶¶ 78–99; Fig. 5; claims 1, 11, 14). The touch action of the user is distinct from wearing the communication device (see claims 1, 2 Reception electrode 53 (see Figs. 3, 4) is used to detect an electrocardiographic waveform of the user (see ¶¶ 87, 102). Appeal 2019-006620 Application 15/527,543 3 11, 16), and is performed by the user with a finger of the arm that is opposite from the arm that wears the device (see ¶¶ 73, 100; Fig. 5).3 Appellant claims a process of authenticating a user to control communications between two devices based on detected (1) biological information, and (2) touch action of a user (claims 1, 11, and 16). Claim 1 is exemplary: 1. A communication device comprising: electric field communication circuitry configured to perform electric field communication using an electric field, the electric field communication including an intra-body communication with a counterpart communication device; a sensor configured to detect biological information about a user; [A] reception circuitry configured to detect a touch action of the user, the touch action being distinct from a wearing of the communication device; and [B] a controller configured to control the electric field communication being performed by the electric field communication circuitry, the control including authorizing the electric field communication with the counterpart communication device only upon an authentication of the user from detection of [1] the biological information and [2] the touch action. Appeal Br. 11, Claims Appendix (emphases and bracketed lettering/numbering added). Remaining independent claims 11 and 16 recite commensurate limitations pertaining to a method (claim 11), and medium with executable program code to perform the method (claim 16), for 3 Appellant describes the touch action detected by reception electrode 54 (see Figs. 3, 4, 5), at least in paragraphs 47, 73, 91, 95, and 97–100. Appeal 2019-006620 Application 15/527,543 4 authenticating a user based on detected (1) biological information, and (2) touch action of a user. Examiner’s Rejections (1) The Examiner rejected claims 1, 3–5, 11–14, and 16–19 as being unpatentable under 35 U.S.C. § 103 over Takano (JP 2012/038127 A1; published Feb. 23, 2012) and Brumback et al. (US 9,044,150 B2; issued June 2, 2015) (hereinafter, “Brumback”) (Final Act. 2–6; Ans. 3–5). (2) The Examiner rejected claims 6, 15, and 20 as being unpatentable under 35 U.S.C. § 103 over Takano, Brumback, and Prakash et al. (US 2015/0220916 A1; published Aug. 6, 2015 and filed Aug. 1, 2013) (hereinafter, “Prakash”) (Final Act. 6–8). ISSUE Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 5–9) and the Reply Brief (Reply Br. 2–7), the following principal issue is presented on appeal4: Has Appellant overcome the Examiner’s prima facie case of obviousness for claims 1, 3–6, and 11–20 under 35 U.S.C. § 103 over 4 We recognize that Appellant’s arguments present additional issues as to the Examiner’s findings regarding various limitations of claims 1, 11, and 16. We were persuaded of error by the issues presented as to motivation to combine with regard to limitations A and B recited in claim 1, and as commensurately recited in remaining independent claims 11 and 16, and as such we do not reach the additional issues, as the issue discussed herein regarding motivation to combine with regard to limitations A and B recited in claim 1, and as commensurately recited in claims 11 and 16, is dispositive of the appeal. Appeal 2019-006620 Application 15/527,543 5 Takano and Brumback, because Takano and Brumback are not properly combinable to teach or suggest limitations A and B, including detections 1 and 2 set forth in limitation B, as set forth in independent claim 1, and as similarly set forth in remaining independent claims 11 and 16? ANALYSIS “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to . . . why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. . . . [W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Further, the USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made” and that articulation requirement “appl[ies] with equal force to the PTAB’s motivation to combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir. 2016); see also Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). This is done by presenting, Appeal 2019-006620 Application 15/527,543 6 for obviousness, a prima facie case. When “motivation to combine . . . is disputed,” USPTO “must articulate a reason why a PHOSITA would combine the prior art references.” In re Nuvasive, Inc., 842 F.3d at 1382. The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that he seeks—the so- called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is on the USPTO “to produce the factual basis for its rejection of an application under sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d at 1017. With this in mind, we have reviewed the Examiner’s rejection (Final Act. 2–6) in light of Appellant’s arguments (Appeal Br. 5–9; Reply Br. 2–6) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Briefs (Ans. 3–5). We concur with Appellant’s contentions (Appeal Br. 7–8; Reply Br. 3–5) that the Examiner erred in determining it would have been obvious to combine Takano’s communication device with biological authentication with Brumback’s touch control operation to teach or suggest the double authentication procedure of limitations A and B of claim 1, and the commensurate limitations recited in claims 11 and 16. Appeal 2019-006620 Application 15/527,543 7 In the instant case, the Examiner’s notification to Appellant of the determination of the obviousness of independent claims 1, 11, and 16 is found at pages 2 through 4 of the Final Rejection and page 5 of the Examiner’s Answer. The Examiner provides the same findings and reasoning for each of claims 1, 11, and 16, thus a discussion of claim 1 will be dispositive of the issue in the instant case on appeal. The Examiner finds that (i) Takano teaches all of the limitations of claim 1, except for reception circuitry configured to detect a touch action as recited in limitation A (see Final Act. 2–3); and (ii) “Brumback teaches that a wearable device having a biological sensor can comprise an activator (reception circuitry) used to detect a touch action of the user and start recording the biological data based on the touch action” (Final Act. 3). The Examiner’s rationale for modifying Takano with Brumback, namely to “permit the user to control when the sensor starts detecting biological information” (Final Act. 4), is conclusory and speculative. Appellant’s contentions that (i) Takano “offers no motivation to implement intervening security procedures prior to the transmission of user information” (Appeal Br. 7; see also Reply Br. 5 (arguing nothing in Takano suggests adding a touch security feature)); (ii) Brumback provides the opposite of the claimed security because Brumback’s device is intended to more easily initiate biometric sensing (see Appeal Br. 7; Reply Br. 5); and (iii) “Brumback does not disclose and has no relevance to the transmission of information to a counterpart device or the security issues that may arise in that setting” (Appeal Br. 7–8; Reply Br. 4), are all persuasive. As a result, Appellant’s final contention, that “[t]he combination lacks a logical foundation” (Reply Br. 5) because there is no logical or rational articulation Appeal 2019-006620 Application 15/527,543 8 as to why an ordinarily skilled artisan would “seek to introduce Brumback’s gesture feature into Takano, when Takano already has an automatic initiation of the biometric sensing” (see Reply Br. 5), is persuasive. Here, in that the Examiner’s obviousness rejection is not well- supported by the express disclosures of Takano and Brumback (neither of which have been shown by the Examiner to teach a double authentication process) and relies on conjecture, such conjecture would require us to “resort to speculation, unfounded assumptions, or hindsight reconstruction.” See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Further, the Examiner’s response to Appellant’s motivation arguments is not well-founded. The Examiner determines: The combination of Takano and Brumback as shown above teaches that the biological information used for authentication and initiation of communications is not obtained until a touch action is received. This means that the device’s controller will not obtain biological information until it is verified that the touch action has been received, and it cannot initiate communications if the touch action used to obtain the biological information is not received/verified because without a touch action, no biological information can be obtained, and without biological information, authentication cannot be performed. Ans. 5. Takano, however, has already authenticated a user’s biological information (from detecting it through the wearing of the device). The Examiner provides no explanation why one of ordinary skill in the art would modify Takano with an additional touch action to provide an additional level Appeal 2019-006620 Application 15/527,543 9 of authentication in authorizing electric field communication by using Brumback’s touch. The Examiner has not provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by KSR. See KSR, 550 U.S. at 418. As such, based on the record before us, we find that the Examiner (i) improperly relies upon the combination of Takano and Brumback to teach or suggest disputed claim limitations A and B as set forth in claim 1 (i.e., the recited double authentication process); and thus, (ii) has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for claims 1, 11, and 16, resulting in a failure to establish a prima facie of obviousness. Based on the record before us, we cannot sustain the Examiner’s obviousness rejection of independent claims 1, 11, and 16 over the combination of Takano and Brumback. We find that the Examiner has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for claims 1, 11, and 16 resulting in a failure to establish a prima facie of obviousness. Thus, on the record before us, we are persuaded the Examiner erred in rejecting claims 1, 11, and 16. CONCLUSION5 5 Paragraph 30 of Takano, not relied on by the Examiner in rejecting the claims on appeal, discloses (i) authenticating with biological information such as fingerprints and other biological information; and (ii) authenticating with biometrics part 15 “by using such biological information combining one or a plurality of biological information” (emphasis added). In addition, in portions of Brumback not relied on by the Examiner in rejecting the claims on appeal, Brumback discloses (i) operating based on a “single-user Appeal 2019-006620 Application 15/527,543 10 Appellant has established that the Examiner erred in determining that Takano and Brumback are combinable to teach or suggest the double authentication process recited in independent claims 1, 11, and 16. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1, 11, and 16, as well as claims 3–6, 12–15, and 17–20 depending respectively therefrom. For all of the reasons above, we hold as follows: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 11– 14, 16–19 103 Takano, Brumback 1, 3–5, 11– 14, 16–19 6, 15, 20 103 Takano, Brumback, Prakash 6, 15, 20 Overall Outcome 1, 3–6, 11– 20 REVERSED gesture” (col. 1, l. 66; col. 2, l. 10; col. 5, l. 56); (ii) “a finger print reader” (col. 3, ll. 46–47); and (iii) authenticating a user based on biological data (col. 5, ll. 6–7). Although not before us on Appeal, we leave it to the Examiner to evaluate whether the independent claims are obvious under 35 U.S.C. § 103 over the combination of Takano and Brumback, relying on new portions of the applied references, and/or with a differently articulated rationale. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th ed. Rev. 10.2019, rev. June 2020). UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MASAHIRO UNO _____________ Appeal 2019-006620 Application 15/527,543 Technology Center 2600 ______________ Before JOHN A. JEFFERY, ERIC S. FRAHM, and SCOTT E. BAIN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge, DISSENTING. I would affirm the Examiner’s obviousness rejection of claim 1. Claim 1 recites, in pertinent part, a communication device with (1) a sensor configured to detect biological information about a user; and (2) a controller configured to control the recited electric field communication by authorizing that communication with a counterpart communication device only upon authenticating the user from detecting (a) the biological information, and (b) a user’s “touch action” that is distinct from wearing the device. As emphasized above, claim 1’s user authentication requires detecting both (1) the biological information, and (2) a user’s “touch action.” Neither the claim nor the Specification, however, defines the term “touch action” Appeal 2019-006620 Application 15/527,543 2 apart from the claim distinguishing this “touch action” from wearing the device. According to the Specification’s paragraph 99, the disclosed wearable device 40 does not start “intra-body communication” unless an authenticated user (1) wears the wearable device, and (2) takes an action to touch reception electrode 54 shown in Figure 3. This “touch action” indicates the user’s intent to conduct intra-body communication. See Spec. ¶ 101. To this end, Appellant’s invention activates a light emitting diode (LED) 55 prompting the user to act so that biological information, namely an electrocardiographic waveform, is detected by electrocardiac detection unit 68. Spec. ¶ 100. As the LED is turned on, the user takes an action to touch the reception electrode—an action referred to as a “touch action.” Id. Through this “touch action,” the user’s electrocardiographic waveform is detected. Id. Notably, if authentication using the electrocardiographic waveform is successful, intra-body communication commences. Id. My emphasis underscores that authentication is based solely on the biological information, namely the electrocardiographic waveform: the preceding “touch action” merely indicates the user’s intent to conduct intra- body communication. See id. ¶¶ 101, 119. Although detecting the “touch action” is required before authenticating using the biological information, the “touch action” merely expresses the user’s intent to communicate in the first instance—it is not otherwise used as a basis for authentication. This fact is consistent with the process detailed in Appellant’s Figure 6. As shown in that figure, upon receiving a beacon signal from an intra- body communication device in step S11, the wearable device turns on LED 55 in step S12 to prompt the user to take a “touch action.” Spec. ¶ 108. Appeal 2019-006620 Application 15/527,543 3 When the user (1) takes a “touch action” as the LED turns on, or (2) touches reception electrode 54, the electrocardiographic waveform is then detected and compared with authentication information, namely a stored electrocardiographic waveform, in steps S13 and S14. See Spec. ¶¶ 109– 111. If authentication is successful in step S15, intra-body communication commences. See id. ¶¶ 115–116. Here again, it is the biological information, namely the electrocardiographic waveform—not the “touch action”—that is used to authenticate the user. Rather, the “touch action” merely indicates the user’s intent to communicate in the first instance. See Spec. ¶¶ 101, 119. Notably, this functionality is analogous to that of an ordinary pushbutton or on/off switch, such as that provided on an electrical appliance or remote control for a television, where depressing the switch indicates the user’s intent to activate—and indeed causes activation of—the device. Moreover, Appellant’s user-intent-based “touch action” functionality is also analogous to that in conventional touch-screen displays in retail stores, grocery stores, convenience stores, and gasoline stations that collect information about the user to, among other things, authenticate that user to authorize payment only after detecting a user touching the screen. Here again, the user’s “touch action” in these ordinary, everyday commercial applications indicates, among other things, the user’s intent to proceed with user authentication and associated data collection. This is an important point. First, the claim does not require the recited “touch action” itself to be a security measure as the Examiner correctly indicates (Ans. 5), but rather recites authenticating the user from detecting (1) the biological information, and (2) the “touch action.” Although user Appeal 2019-006620 Application 15/527,543 4 authentication results from detecting both the biological information and the “touch action,” it is the detected biological information—not the “touch action”—that is ultimately analyzed to authenticate the user. See Spec. ¶¶ 101, 119, 111 (noting that the user is authenticated by comparing the user’s detected electrocardiographic waveform with a stored waveform). The Majority’s conclusion, then, that the Examiner erred in determining it would have been obvious to combine Takano’s communication device with biological authentication with Brumback’s touch control operation to teach or suggest the “double authentication” procedure of the claimed invention on page 6 of the Majority’s decision not only glosses over the Examiner’s articulated findings and articulated rationale to combine the references, but frankly overstates the purpose of the recited “touch action” as somehow imparting some form of “double authentication” where none exists. Elsewhere in the opinion, the Majority similarly grafts an unclaimed—and indeed undisclosed—“double authentication” requirement to the claimed invention in finding error in the Examiner’s rejection where none exists. See, e.g., Maj. Dec. 7 (“[T]he Examiner’s obviousness rejection is not well-supported by the express disclosures of Takano and Brumback (neither of which have been shown by the Examiner to teach a double authentication process) . . . .”); id. at 8 (noting that the Examiner does not explain why ordinarily skilled artisans would “modify Takano with an additional touch action to provide an additional level of authentication in authorizing electric field communication by using Brumback’s touch”) (emphases added). Appeal 2019-006620 Application 15/527,543 5 As noted previously, however, detecting the recited “touch action” merely indicates the user’s intent to communicate in the first instance: it is the biological information that is analyzed to authenticate the user. See Spec. ¶¶ 101, 111, 119. Notably, the Examiner’s articulated reason to combine Brumback’s teaching of recording biological information responsive to detecting a user’s “touch action” with Takano in the rejection is reasonably consistent with the disclosed intent-expressing purpose of the recited “touch action,” namely to permit the user to control when the sensor starts detecting biological information. See Final Act. 4. Despite the Majority’s conclusion to the contrary, there is a rational basis for the Examiner’s articulated reasoning, for a user can decide when to touch a surface and, therefore, control when biological information is collected under the proposed combination. As explained in the Abstract, Brumback’s biometric monitoring device allows a person to take or display a heart rate reading by simply touching a heart rate sensor surface area. As shown in Brumback’s Figure 9, after the device determines that an activator (i.e., a touch sensor) receives an activation signal indicating a single user-gesture, namely a touch, in step 910, the heart rate sensor then collects heart rate data in step 920 and associated feedback is provided in step 930. See Brumback col. 18, ll. 17– 58. Similarly, the process detailed in Brumback’s Figure 10 likewise requires detecting a touch-based activation signal before collecting heart rate data in steps 1010 and 1020. See Brumback col. 18, l. 62 – col. 19, l. 22. The import of this functionality is that biological information, namely heart rate data, is collected responsive to detecting the user’s touch or, in Appellant’s parlance, the user’s “touch action.” That is, but for the user’s Appeal 2019-006620 Application 15/527,543 6 touch, biological information would not be collected in Brumback. And because the user decides when to touch the sensor, the user in Brumback effectively controls when information is collected responsive to that detected “touch action.” In other words, the user’s touch effectively expresses the user’s intent to collect the information in Brumback—an aspect strikingly similar to the user-intent-based “touch action” of the claimed invention. See Spec. ¶¶ 101, 111, 119. On this record, I see no reason why such touch-based functionality could not be provided in connection with Takano’s system to, among other things, enable the user to control when biological information is collected by merely touching a surface as the Examiner proposes. See Final Act. 4; Ans. 5. As noted in the Abstract, Takano’s information processing device and communication system (1) enables authentication only when the biological information’s owner wears a device, and (2) disables authentication when the device is detached from the body. As Takano explains in paragraph 38, if a user attaches information processing apparatus 10 to the body, the apparatus (1) detects that biometrics part 15 is attached to the body through second electrode 18, and (2) starts authentication. To this end, the biometrics part authenticates using biological information that specifies an individual uniquely, such as a fingerprint, vein, electrocardiographic information, electroencephalogram, etc. Takano ¶ 30. The biometrics part, for example, (1) takes a user’s fingerprint or measures electrocardiographic information, and (2) reads a user’s biological information. Takano ¶¶ 30, 38. Appeal 2019-006620 Application 15/527,543 7 As noted above, Takano’s authentication occurs by first taking a user’s fingerprint, and then reading that biological information, namely the fingerprint. See Takano ¶¶ 38, 30 (noting that biological information can be a fingerprint). Notably, the very act of taking a user’s fingerprint involves the user touching a transparent plate to place the finger in a position adjacent to a camera that images the fingerprint. See Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 286 (2004) (defining “fingerprint recognition” as “[a] technology utilized to identify fingerprints. For instance, a user may place a finger on a glass plate, enabling a biometric system utilizing a charge-coupled device camera along with a computer accessing a fingerprint database to confirm the identity of the user corresponding to the fingerprint.”) (emphasis added). Because the user first touches a glass plate before fingerprint information is collected and read, the user effectively decides when this information is collected, namely when the user decides to touch the plate. Detecting this “touch action” before collecting this biological information, namely the fingerprint, would, among other things, indicate when the user’s finger is positioned adjacent the camera and, therefore, ready for imaging. Perhaps more importantly, in addition to this technical advantage, this touch detection would also indicate the user’s intent to take the fingerprint in the first instance, namely by placing the finger on the plate—an aspect strikingly similar to the user-intent-based “touch action” of the claimed invention. See Spec. ¶¶ 101, 111, 119. Therefore, I see no error in the Examiner’s conclusion that it would have been obvious to provide functionality that collects biological Appeal 2019-006620 Application 15/527,543 8 information responsive to a detected “touch action,” such as that in Brumback, in connection with Takano’s system that uses detected biological information, namely a fingerprint, to authenticate the user. The proposed combination would not only permit the user to control when biological information, namely a fingerprint, is detected as the Examiner indicates (Final Act. 4), but also when this biological information is collected and used to authenticate the user—a predictable result. In this sense, the user’s “touch action” that is detected before collecting biological information in Brumback is analogous to the user pushing an “on” button to start collecting that information. That is, but for the user’s “touch action” in Brumback—an action that indicates the user’s intent to proceed with collecting biological information—that information would not be collected. Therefore, when this functionality is applied to Takano—a system that likewise collects biological information, including fingerprints, for authentication—authentication would not occur but for the user’s “touch action” as the Examiner indicates. See Ans. 5 (“[W]ithout a touch action, no biological information can be obtained, and without biological information, authentication cannot be performed.”). That collecting biological information, namely fingerprints, in Takano involves a user first touching a transparent plate to place the finger in a position adjacent to a camera that images the fingerprint as noted previously only underscores the rational underpinning for the Examiner’s proposed combination. In short, providing Brumback’s detection-based functionality that indicates the user’s intent to proceed with the system’s collecting biological information in Takano’s system that likewise collects biological information, Appeal 2019-006620 Application 15/527,543 9 including fingerprints, for authentication purposes uses prior art elements predictably according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). To be sure, Takano’s Abstract notes that authentication is enabled only when the biological information’s owner wears a device—a donned condition distinct from the recited “touch action” under the terms of claim 1. Although wearing the device enables authentication in Takano, I nonetheless see no reason why authentication could not also be based, at least partly, on detecting the user’s “touch action” under the Examiner’s proposed combination, particularly since Takano’s user touches a transparent plate before biological information, namely the user’s fingerprint, is collected and used to authenticate the user as noted previously. That Takano’s paragraph 30 notes that authentication can be based on combining plural biological information underscores that Takano’s authentication is not based solely on wearing the device as Appellant seems to suggest, but can also be based on various forms of biological information, including fingerprints which, as noted above, involve a user’s “touch action” to acquire that information. To the extent Appellant contends that Takano teaches away from detecting the user’s touch in a manner such as that in disclosed in Brumback as the Examiner proposes, or that doing so would somehow render Takano’s system unsuitable for its intended purpose (see Appeal Br. 6–8; Reply Br. 3– 5), there is no persuasive evidence on this record to substantiate such a theory. Where, as here, Appellant’s arguments and conclusory statements are unsupported by factual evidence, they have little probative value in my view. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). See also Appeal 2019-006620 Application 15/527,543 10 Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Despite Appellant’s arguments to the contrary, I see nothing in the cited references that criticizes, discredits, or otherwise discourages investigation into the invention claimed as required for teaching away. See Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). Rather, the Examiner’s proposed combination enhances Takano’s system by ensuring that biological information, namely a fingerprint, is collected responsive to detecting the user’s touch—a useful adjunct that would, among other things, collect this information when the user wants that information to be collected, namely when the user places a finger on a transparent plate as noted previously. In short, the Examiner’s proposed enhancement uses prior art elements predictably according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Notably, the Examiner’s proposed combination would not destroy, obviate, or otherwise discount Takano’s requirement that the device be worn to authenticate the user as noted in the Abstract: that requirement still remains. Rather, the Examiner’s proposed combination merely adds the ability for the user in Takano to control when biological information, namely the user’s own fingerprint, is collected and used for authentication—a useful adjunct that yields a predictable result. On this record, then, I find the Examiner’s articulated reason to combine the teachings of Takano and Brumback has a rational underpinning to justify the Examiner’s obviousness conclusion. Therefore, I would affirm the Examiner’s rejection of claim 1.